Overview of infringement of trade marks

The rights of an owner of a registered trade mark are stated in s 20(1) to be the right to use the trade mark and to authorise other persons to use the trade mark in relation to goods and/or services in respect of which the trade mark is registered. Section 20(2) also provides that the registered owner has the right to obtain relief under this Act if the trade mark has been infringed.

Section 120(1)–(3) provides three different circumstances in which a registered owner may sue for infringement. However, before turning to the individual aspects of each sub-section, a number of general features of the three different forms of infringement can be identified and examined.

Use as a trade mark

Each of the forms of infringement requires that the defendant uses, as a trade mark, a sign that is substantially identical with or deceptively similar to the plaintiff's registered trade mark. As with so many aspects of the legislation, use as a trade mark is a critical issue and it needs to be considered here in the context of infringement.

The 1955 Act did not expressly require the defendant to use the trade mark as a trade mark in order to constitute infringement but the case law on the topic made it abundantly clear that such a requirement was implied in the legislation.